Trials@uspto.gov
`571-272-7822
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`Paper 19
`Date: November 19, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioner,
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`
`IPR2020-00994
`Patent 7,104,347 B2
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
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`571-272-7822
`
`Paper 19
`Date: November 19, 2020
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`
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`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT &
`BMW OF NORTH AMERICA, LLC,
`Petitioner,
`v.
`
`PAICE LLC & THE ABELL FOUNDATION, INC.,
`Patent Owner.
`
`IPR2020-00994
`Patent 7,104,347 B2
`
`Before SALLY C. MEDLEY, KALYAN K. DESHPANDE, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`PESLAK, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
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`
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`IPR2020-00994
`Patent 7,104,347 B2
`
`INTRODUCTION
`I.
`Bayerische Motoren Werke Aktiengesellschaft and BMW of North
`America, LLC (collectively “Petitioner” or “BMW”) filed a Petition (Paper
`1) and, with our permission, filed a Corrected Petition (Paper 11, “Pet.”)
`requesting an inter partes review of claims 2, 11, 17, 24, 33, and 38 of U.S.
`Patent 7,104,347 B2 (Ex. 1001, “the ’347 patent”). Paice LLC and the Abell
`Foundation, Inc. (collectively “Patent Owner” or “Paice”) filed a
`Preliminary Response (Paper 13, “Prel. Resp.”). With our permission,
`Petitioner filed a Reply to Patent Owner’s Preliminary Response to address
`discretionary denial issues raised by Patent Owner in the Preliminary
`Response. Paper 16 (“Pet. Reply”). Patent Owner, in turn, filed a Sur-reply.
`Paper 17.
`We have authority, acting on the designation of the Director, to
`determine whether to institute an inter partes review under 35 U.S.C.
`§ 314(a). See also 37 C.F.R § 42.4(a) (2019) (“The Board institutes the trial
`on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes
`review may not be instituted unless the information presented in the Petition
`shows “there is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.” Taking into
`account the Petition, the arguments presented in the Preliminary Response,
`as well as all supporting evidence, we conclude that the information
`presented in the Petition establishes that there is a reasonable likelihood that
`Petitioner would prevail in its challenge of at least one claim of the ’347
`patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an
`inter partes review of all challenged claims of the ’347 patent on all grounds
`stated in the Petition.
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`2
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`Our factual findings and legal conclusions at this stage of the
`proceeding are based on the evidentiary record developed thus far. This
`decision to institute trial is not a final decision as to the unpatentability of
`the claims for which inter partes review is instituted. Our final decision will
`be based on the full record developed during trial.
`
`A. Related Matters
`The ’347 patent is currently at issue in Paice LLC v. Bayerische
`Motoren Werke Aktiengesellschaft, 1:19-cv-03348-SAG (D. Md.). Paper 4,
`2. The ’347 patent was subject to review in IPR2014-00571, IPR2014-
`00579, IPR2014-00884, IPR2015-00794, IPR2015-00795, IPR2017-00227,
`IPR2017-00226, and IPR2016-00272. Pet. 72–73. Final Written Decisions
`were issued in IPR2014-00571, IPR2014-00579, IPR2014-00884, IPR2015-
`00794, and IPR2015-00795. Ex. 1003; Ex. 1004; Ex. 1006; Ex. 1010. The
`Federal Circuit affirmed the Board’s Final Written Decisions. Ex. 1005; Ex.
`1007.
`
`B. Real Parties in Interest
`Petitioner and Patent Owner state that the named entities are the only
`real parties in interest. Pet. 72; Paper 4, 2.
`
`C. The ’347 Patent (Ex. 1001)
`The ’347 patent issued on September 12, 2006, and is titled “Hybrid
`Vehicles.” Ex. 1001, codes (45), (54). The ’347 patent issued from U.S.
`Patent Application 10/382,577 filed March 7, 2003. Id. at codes (21), (22).
`The ’347 patent is directed to hybrid vehicles comprising an internal
`combustion engine, a traction motor, and a battery bank and are controlled
`by a microprocessor so that engine runs only under high efficiency
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`Patent 7,104,347 B2
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`conditions in response to the vehicle’s torque requirements. Id. at code (57).
`Figure 4 of the ’347, reproduced below, illustrates the drive system of a
`hybrid vehicle:
`
`
`
`Figure 4 is “a block diagram of the principal components of the drive
`system” of an embodiment of the hybrid vehicle of the ’347 patent. Id. at
`22:15–16. As shown in Figure 4, the drive system includes internal
`combustion engine 40, starting motor 21, traction motor 25, battery bank 22,
`and microprocessor 48. Id. at 17:5–45. The microprocessor features an
`engine control strategy that runs the engine only under conditions of high
`efficiency, typically when the vehicle’s instantaneous torque requirements
`(i.e., the amount of torque required to propel the vehicle, or “road load”) is
`at least equal to 30% of the engine’s maximum torque output (“MTO”)
`capability. Id. at 20:52–60, 35:5–14; see also id. at 13:47–61 (“the engine is
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`never operated at less than 30% of MTO, and is thus never operated
`inefficiently.”).
`Running the engine only when it is efficient to do so leads to
`improved fuel economy and reduced emissions. Id. at 13:47–51. To achieve
`such efficiency, the hybrid vehicle includes various operating modes that
`depend on the vehicle’s torque requirements, the battery’s state of charge,
`and other operating parameters. Id. at 19:53–55. For example, the hybrid
`vehicle may operate in: (1) an all-electric mode, where only the traction
`motor provides the torque to propel the vehicle and operation of the engine
`would be inefficient (i.e., stop-and-go city driving); (2) an engine-only
`mode, where only the engine provides the torque to propel the vehicle and
`the engine would run at an efficient level (i.e., highway cruising); (3) a dual-
`operation mode, where the traction motor provides additional torque to
`propel the vehicle beyond that already provided by the engine and the torque
`required to propel the vehicle exceeds the maximum torque output of the
`engine (i.e., while accelerating, passing, and climbing hills); and (4) a
`battery recharge mode where the engine operates a generator to recharge the
`battery while the traction motor drives the vehicle. Id. at 35:66–36:58,
`37:26–38:55.
`
`D. Prior Art and Asserted Grounds
`Petitioner asserts that claims 2, 11, 17, 24, 33, and 38 would have
`been unpatentable on the following grounds1:
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’347
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`Claim(s) Challenged
`24
`33
`38
`2
`11
`17
`24
`2
`2, 24
`11, 33
`
`35 U.S.C. §
`103
`103
`103
`103
`103
`103
`103
`103
`103
`103
`
`Reference(s)/Basis
`Severinsky2, Graf3
`Severinsky, Ma4
`Severinsky, Ehsani5
`Severinsky, Ehsani, Graf
`Severinsky, Ehsani, Ma
`Severinsky, Ehsani
`Severinsky, Nii6
`Severinsky, Ehsani, Nii
`Bumby7, Graf
`Bumby, Ma
`
`
`patent was filed before the effective date of the relevant amendment, the pre-
`AIA version of § 103 applies.
`2 US 5,343,970, issued Sept. 6, 1994 (Ex. 1013, “Severinsky”).
`3 US 6,188,945 B1, issued Feb. 13, 2001 (Ex. 1020, “Graf”).
`4 WO 92/15778, published Sept. 17, 1992 (Ex. 1021, “Ma”).
`5 US 5,586,613, issued Dec. 24, 1996 (Ex.1019, “Ehsani”).
`6 US 5,650,931, issued July 22, 1997 (Ex. 1022, “Nii”).
`7 J.R. Bumby, Computer modelling of the automotive energy requirements
`for internal combustion engine and battery electric-powered vehicles, IEEE
`PROC., v. 132, pt. A, no. 5, 265–279 (Sep. 1985) (Ex. 1014 )(“Bumby I”);
`J.R. Bumby and I. Forster, Optimisation and control of a hybrid electric
`car, IEE PROC., v. 134, pt. D, no. 6, 373–387 (Nov. 1987) (Ex. 1015)
`(“Bumby II”) ; I. Forster and J.R. Bumby, A hybrid internal combustion
`engine/battery electric passenger car for petroleum displacement, PROC.
`INST. MECH. ENGRS., v. 202, no. D1, 51–64 (Jan. 1988) (Ex. 1016)
`(“Bumby III”); J.R. Bumby and P.W. Masding, A Test-Bed Facility for
`Hybrid IC Engine-Battery Electric Road Vehicle Drive Trains, TRANS.
`INST. MEAS. & CONT., v. 10, no. 2, 87–97 (Apr. 1988) (Ex.
`1017)(“Bumby IV”); P.W. Masding and J.R. Bumby, Integrated
`microprocessor control of a hybrid i.c. engine/battery-electric automotive
`power train, TRANS. INST. MEAS. & CONT., v. 12, no. 3, 128-146 (Jan.
`1990) (Ex. 1018)(“Bumby V”)(collectively “Bumby”).
`6
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`Claim(s) Challenged
`17, 38
`
`
`35 U.S.C. §
`103
`
`Reference(s)/Basis
`Bumby, Ehsani
`
`E. The Challenged Claims
`Petitioner challenges dependent claims 2, 11, 17, 24, 33, and 38.
`Pet. 1. Claims 1, 3–10, 14–16, 19–23, 25–30, 32, 36, 37, and 39–41 of the
`’347 patent were previously cancelled. Ex. 1001, 55–58. Each of the
`challenged claims depends directly or indirectly from independent claim 1 or
`independent claim 23 which have both been cancelled. Id. at 58:12–62:52.
`Claim 1 is directed to a hybrid vehicle requiring, inter alia, an internal
`combustion engine, a first electric motor, a second electric motor, a battery,
`and a controller operating the engine and motors according to a setpoint
`(SP). Id. at 58:13–37. Claim 1 was previously found unpatentable over
`Severinsky and Ehsani and over Bumby alone. Pet. 4–5 (citing Ex. 1003;
`Ex. 1004). Claim 23 is directed to a method of control of a hybrid vehicle
`comprising similar elements as claim 1. Ex. 1001, 60:22–52. Claim 23 was
`previously found unpatentable over Severinsky alone and over Bumby
`alone. Pet. 4–5.
`Claim 2 requires that the controller “monitors patterns of vehicle
`operation over time and varies said setpoint SP accordingly.” Id. at 58:38–
`40. Claim 24 contains limitations substantively similar to claim 2. Id. at
`60:55–57. Claims 11 and 33 require, inter alia, a turbocharger coupled to
`the internal combustion engine. Id. at 59:30–39, 61:52–62:8. Claim 17
`requires that the engine and one electric motor are coupled to a first set of
`wheels and the second electric motor is coupled to a second set of wheels.
`Id. at 59:64–67. Claim 38 requires the addition of a clutch and speed control
`of the output shafts of the engine/motors. Id. at 62:29–37.
`7
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`II. ANALYSIS
`A. Overview
`A petition must show how the construed claims are unpatentable
`under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
`Petitioner bears the burden of demonstrating a reasonable likelihood that it
`would prevail with respect to at least one challenged claim for a petition to
`be granted. 35 U.S.C. § 314(a).
`A claim is unpatentable under § 103(a) if the differences between the
`claimed subject matter and the prior art are such that the subject matter, as a
`whole, would have been obvious at the time the invention was made to a
`person having ordinary skill in the art to which said subject matter pertains.
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) when in evidence, objective indicia of non-obviousness
`(i.e., secondary considerations). Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`We analyze the asserted grounds based on obviousness with these
`principles in mind.
`
`B. Level of Ordinary Skill in the Art
`Petitioner contends that a skilled artisan would have “a graduate
`degree in mechanical, electrical or automotive engineering with at least
`some experience in the design and control of combustion engines, electric or
`hybrid electric propulsion systems, or design and control of automotive
`transmissions.” Pet. 5. Petitioner alternately contends that a skilled artisan
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`would have “a bachelor’s degree in mechanical, electrical or automotive
`engineering and at least five years of experience in the design of combustion
`engines, electric vehicle propulsion systems, or automotive transmissions.”
`Id. (citing Ex. 1008 ¶¶ 43–46). Patent Owner does not address the level of
`ordinary skill in the art in the Preliminary Response. See generally Prel.
`Resp.
`For the purposes of this Decision, we adopt Petitioner’s proposed
`level of ordinary skill in the art because it appears consistent with the
`problems addressed in the ’347 patent and the prior art of record.
`
`C. Claim Construction
`Petitioner submits that three claim terms were construed by the Board
`in prior inter partes reviews of the ’347 patent and that those constructions
`were affirmed by the Federal Circuit on appeal. Pet. 6–7 (citing Ex. 1003, 8,
`11; Ex. 1004, 8, 11; Ex. 1005; Ex. 1011, 13). The terms and the previous
`constructions are as follows:
`
`1) “road load” or “RL” as “amount of instantaneous torque required
`for propulsion of the vehicle”;
`2) “setpoint” or “SP” as “a predefined torque value that may or may
`not be reset”; and
`3) “monitoring patterns of vehicle operation over time” as
`“monitoring a driver’s repeated driving operations over time.”
`Patent Owner does not dispute these constructions or request that we
`construe any other terms. Prel. Resp. 27. Therefore, we utilize these claim
`constructions in this Decision.
`
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`D. Patent Owner’s Request for Discretionary Denial of Institution
`Introduction
`1.
`Patent Owner contends that we should exercise our discretion under
`35 U.S.C. § 314(a)8 and deny institution because, according to Patent
`Owner, the “Petition is not a fair and efficient use of IPR” but “is a classic
`example of a serial IPR challenge designed to harass the Patent Owners and
`abuse the IPR process.” Prel. Resp. 7–8. Patent Owner contends that this
`“Petition is the ninth petition against the ’347 patent.” Id. at 8 (bolding
`omitted). Patent Owner asserts that the previous petitions were filed by
`“Ford, VW, and Hyundai.” Id. Patent Owner further contends that prior to
`this Petition, Patent Owner was “already universally recognized as the poster
`child of patent owners that have suffered harassment and abuse at the hand
`of larger, well-funded petitioners filing serial patent attacks.” Id. at 5 (citing
`Ex. 2010). Patent Owner further contends that in presenting 11 grounds,
`Petitioner “cherry-picks art already presented in the Ford and VW petitions
`and even retains Ford’s expert to support its attack on the ’347 patent.” Id.
`at 9. Patent Owner contends the factors set forth in General Plastic
`Industrial Co., Inc., v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19,
`18 (PTAB Sept. 6, 2017)(precedential) weigh against institution. Prel. Resp.
`at 9–20.
`Petitioner contends this is not a serial petition and it “did not bring
`this action after gaining any strategic advantage from co-defendants or other
`
`8 Patent Owner also contends that we “could additionally, or alternatively,
`deny BMW’s Petition under 35 U.S.C. § 325(d).” Prel. Resp. 8 n.4. Patent
`Owner does not provide any argument or analysis in support of this
`contention. See generally Prel. Resp. Therefore, we do not address
`§ 325(d).
`
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`similarly situated companies filing IPR petitions around the same time.”
`Pet. Reply 1. Petitioner further contends that it “quickly filed this petition
`once Patent Owners . . . identified the allegedly infringing claims on March
`25, 2020 –– several years after earlier filed IPRs on mostly different claims,
`against different parties, had concluded.” Id. Petitioner asserts that it
`“challenges six dependent claims . . . of the ’347 Patent asserted by Patent
`Owners” in co-pending District Court litigation. Id. Petitioner further
`contends only two of the six challenged claims had been the subject of prior
`inter partes reviews of the ’347 patent and that “none of the combinations of
`art asserted against those dependent claims have been previously considered
`by the Board.” Id. at 1–2.
`Analysis of § 314(a) Discretion
`2.
`In General Plastic, the Board set forth seven non-exclusive factors
`that inform “the public of the Board’s considerations in evaluating follow-on
`petitions.” Paper 19 at 16. These factors are:
`1. whether the same petitioner previously filed a petition
`directed to the same claims of the same patent;
`2. whether at the time of filing of the first petition the petitioner
`knew of the prior art asserted in the second petition or should
`have known of it;
`3. whether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary
`response to the first petition or received the Board’s decision
`on whether to institute review in the first petition;
`4. the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the second petition and the
`filing of the second petition;
`5. whether the petitioner provides adequate explanation for the
`time elapsed between the filings of multiple petitions
`directed to the same claims of the same patent;
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`6. the finite resources of the Board; and
`7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than 1 year after the date on which
`the Director notices institution of review.
`Id. (citing NVIDIA Corp. v. Samsung Elec. Co., IPR2016-00134, Paper 9, 6–
`7 (PTAB May 4, 2016)). These factors are “a non-exhaustive list” and
`“additional factors may arise in other cases for consideration, where
`appropriate.” Nvidia, Paper 9 at 7, 8. In addition, we note that where a
`subsequent petition is filed by a different petitioner than the entity that filed
`the previous petitions, the Board has also considered whether multiple
`petitions filed against the same patent is a direct result of Patent Owner’s
`litigation activity. See Samsung Elecs. Am., Inc. v. Uniloc Luxembourg S.A.,
`IPR2017-01797, Paper 8, 33–34 (PTAB Feb. 6, 2018) (recognizing the
`purpose of the availability of inter partes review to parties accused of
`infringement, and finding Patent Owner’s complaint about multiple petitions
`filed against the same patent unpersuasive “when the volume [of petitions]
`appears to be a direct result of its own litigation activity.”).
`Although the General Plastic factors typically apply to situations
`where the same party files multiple petitions challenging the same patent,
`“the General Plastic factors provide a useful framework for analyzing the
`facts and circumstances . . . in which a different petitioner filed a petition
`challenging a patent that had been challenged already by previous petitions.”
`NetApp Inc. v. Realtime Data LLC, IPR2017-01195, Paper 9, 10 (PTAB
`Oct. 12, 2017). In the context of analyzing General Plastic factor 1, “when
`different petitioners challenge the same patent, we consider any relationship
`between those petitioners.” Valve Corp. v. Elec. Scripting Prods., Inc.,
`IPR2019-00062, Paper 11, 2 (PTAB April 2, 2019)(precedential). In Valve
`Corp., the Board found “a significant relationship between Valve” and the
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`earlier petitioner, HTC, existed because “both were co-defendants . . .
`accused of infringing the ’934 patent based on the same product,” “Valve
`represented that ‘HTC’s VIVE devices incorporate certain Valve
`Technologies,’” and “Valve employees did provide HTC with technical
`assistance during development of the accused VIVE devices.” Id. at 9–10.
`Further, the Board found that “complete overlap in the challenged claims
`and the significant relationship between Valve and HTC favor denying
`institution.” Id. at 10.
`
`a. General Plastic Factor 1
`Patent Owner concedes that Petitioner “is not the same entity as” prior
`petitioners Ford, VW, and Hyundai but contends that Petitioner “has tied
`itself to these previous petitioners by reusing their petitions, prior art, and
`expert.” Prel. Resp. 11. Patent Owner contends that claims 2 and 24
`survived multiple challenges by Ford and VW. Id. at 10. Patent Owner
`further contends that among all the challenged claims, only claims 11 and 33
`“apply a new prior art reference that was not already applied by Ford or
`VW.” Id. at 11. Patent Owner further contends that Petitioner relies on the
`same prior art as Ford, i.e., Severinsky, Ehsani and Bumby, to challenge
`independent claims 1 and 23 and relies on Graf which was cited by VW. Id.
`at 11–12. Patent Owner further contends that Petitioner retained the same
`expert, Dr. Gregory Davis, who testified on behalf of Ford and “undoubtedly
`relied on Dr. Davis’s inside knowledge of Ford’s IPR strategy.” Id. at 12.
`According to Patent Owner, Petitioner “created and leveraged its
`relationship with these previous petitioners” by relying on the same prior art
`and expert. Id. In support of its contention, Patent Owner cites to Ericsson
`Inc. v Uniloc 2017, LLC, IPR2019–01550, Paper 8 (PTAB Mar. 17, 2020)
`
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`and contends that “BMW ‘implicitly created’ a relationship with Ford and
`VW by recycling contentions against the same claims of the same patent.”
`Id. at 12–13; Sur-reply 3.
`Petitioner responds that of the six challenged claims, “[o]nly Claims 2
`and 24 had previously been litigated and subject to IPR’s.” Pet. Reply 1.
`Petitioner further contends that “Claim 2 only reached Institution Decision
`and Claim 24 reached Final Decision on completely different prior art
`grounds.” Id.9 Petitioner further contends that it is not challenging
`independent claims 1 and 23 but challenges only claims that depend from
`these claims and “uses the same art (notably Severinsky, Ehsani, and
`Bumby) that already rendered Claims 1 and 23 unpatentable.” Id. at 2.
`Petitioner also contends that it relies on Dr. Davis because “the Board
`already credited” his testimony in determining claims 1 and 23 unpatentable.
`Id. Petitioner further contends that, unlike the subsequent petitioner in
`Valve, it is not related to the prior petitioners, is not a co-defendant with the
`prior petitioners, and is not charged with infringement based on the same
`product or shared technology. Id. at 4 (“BMW had no reason to challenge
`the ’347 Patent until Patent Owners sued in November 2019”).
`
`
`9 The Board refused institution on claim 2 in IPR2015-00795. Prel. Resp. 10
`(citing Ex. 2004, 21–22); Sur-reply 2. With respect to claim 24, the Board
`determined that Ford had not established that claim 24 was unpatentable in
`the Final Written Decision in IPR2014-00884 and refused to institute on
`claim 24 in IPR2015-00794. Prel. Resp. 10 (citing Ex. 1022, 24–25;
`Ex. 2003, 20–21); Sur-reply 2. Claim 24 was also challenged in IPR2017-
`00226 and IPR2017-00227 but the cases were settled prior to institution.
`Pet. Reply 1 n. 2.
`
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`Patent Owner, in turn, contends that Petitioner “‘implicitly created’ a
`significant relationship with Ford and VW as to the ’347 patent by
`leveraging Ford’s and VW’s previous patentability analysis and hiring
`Ford’s expert who undoubtedly shared his inside knowledge with BMW in
`an effort to improve BMW’s Petition.” Sur-Reply 3 (citing Prel. Resp. 12).
`According to Patent Owner, “[t]his tacit cooperation is comparable to what
`occurs amongst similarly situated co-defendants in litigation who share work
`product and witnesses in opposition to the plaintiff.” Id.
`For the following reasons, we determine that Factor One favors
`institution. In the Ericsson IPR relied on by Patent Owner, the Board found
`that “[l]ooking at all of the challenged claims in the aggregate, the same
`claims are being challenged in this Petition as in the prior petitions” but
`noted that “if Petitioner had challenged claims that were not previously
`challenged, this fact could weigh in its favor.” Ericsson, Paper 8 at 11. In
`this case, Petitioner is challenging claims 11, 17, 33, and 38 that were not
`previously challenged and this fact weighs in favor of institution.
`We note that Patent Owner sued BMW in November 2019 (Pet. Reply
`5) some five years after separately suing its competitors Ford and VW. See
`IPR2014-00571, Paper 6, 2 (Suit filed against Ford on February 19, 2014).
`These facts weigh against finding a significant relationship between BMW
`and the prior petitioners. In addition, there is no evidence before us that
`BMW is selling the same products as Ford and VW which also weighs
`against finding a significant relationship between BMW and the prior
`petitioners. The overlap between the earlier petitions and the present case is
`primarily because Petitioner relies on the same prior art references and Dr.
`Davis’s testimony in connection with establishing the limitations of
`independent claims 1 and 23 which are already cancelled based on that
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`evidence. Pet. Reply 2. Petitioner has not relied on Dr. Davis10 to gain an
`improper advantage but, rather, because his testimony formed part of the
`basis for the cancellation of claims 1 and 23 in the prior petitions, Petitioner
`reiterates it here in order to streamline the analysis of dependent claims 2
`and 24. Id. Because Petitioner is challenging claims not previously
`challenged in any prior petition, is not a co-defendant in pending litigation
`involving the same products or technology as the prior IPRs, and is a
`competitor of Ford and VW, we find that BMW did not implicitly create a
`“significant relationship” with Ford and VW. Consequently, General
`Plastic factor one weighs in favor of institution.
`b. General Plastic Factors 2 and 4
` Patent Owner contends that Severinsky, Nii, and Ehsani are listed on
`the face of the ’347 patent and were considered during prosecution. Prel.
`Resp. 15. Patent Owner also contends that Petitioner was aware that it
`asserted both the ’347 patent and Severinsky against Toyota in prior
`litigation. Id. Patent Owner further contends that factors 2 and 4 weigh in
`favor of denial of institution because of a five-year time gap between Ford’s
`last petition and the Petition here. Id. at 15–16.
`Petitioner contends that Patent Owner’s analysis of factors two and
`four “do[es] not make any sense here, but those factors nonetheless favor
`institution.” Pet. Reply 4–5. Petitioner further contends that the five-year
`time gap “is solely of Patent Owner[’]s making” because Petitioner “had no
`
`
`10 We note that Dr. Davis is not employed by Ford but currently is a
`Professor of Mechanical Engineering & Director of the Advanced Engine
`Research Laboratory at Kettering University. Ex. 1008 ¶ 26.
`
`16
`
`
`
`IPR2020-00994
`Patent 7,104,347 B2
`
`reason to challenge the ’347 Patent until Patent Owner[ ] sued in November
`2019.” Id. at 5.
`Patent Owner, in turn, contends that Petitioner “does not dispute that
`it was aware of the ’347 patent and the prior art at the time of the earlier
`Ford and VW petitions.” Sur-reply 6.
`We find that General Plastic Factors 2 and 4 are neutral in this case.
`Petitioner does not dispute that it was aware of the prior petitions and relies
`on the same prior art. But, significantly, the overlap in prior art is due to the
`fact that the prior art formed the basis for cancellation of independent claims
`1 and 23.
`
`c. General Plastic Factor 3
`Patent Owner contends that General Plastic factor 3 favors denial of
`institution because the “Petition is replete with citations to the Board’s Final
`Written Decisions, which in turn rely on Patent Owner[’]s Preliminary
`Response from the Ford IPRs.” Prel. Resp. 13–14 (citing Pet. 8, 11, 12).
`Patent Owner contends that the Petition retools “its arguments to address
`Patent Owner[’]s successful Preliminary and Patent Owner Responses” by
`applying “Patent Owner’s claim construction of ‘monitoring patterns of
`operation’ which the Board adopted in rejecting Ford’s” challenges to claims
`2 and 24 and then asserting the Graf reference which Patent Owner deems to
`be “art derived from VW’s petitions.” Id. at 13. According to Patent
`Owner, “[t]his is the very unfairness the General Plastic Factors were
`formulated to prevent.” Id. (citing Google LLC v. Uniloc Luxembourg S.A.,
`IPR2017-01665, Paper 10 (PTAB, Jan. 11, 2018); General Plastic, Paper 9
`at 17).
`Petitioner contends that General Plastic factor 3 does not apply to the
`challenges to claims 11, 17, 33, and 38 which have not been previously
`17
`
`
`
`IPR2020-00994
`Patent 7,104,347 B2
`
`challenged and were never addressed in a preliminary response or Board
`Decision. Pet. Reply 5. Petitioner further contends that this factor does not
`weigh against institution for claim 2 and claim 24 because the previous
`challenges relied on completely different prior art. Id. at 5–6 (table
`comparing prior art references used to challenge claims 2 and 24 in prior
`IPRs and this IPR). Petitioner further contends that “citations to prior Final
`Written Decisions . . . all relate to claim construction and issue preclusion.
`Yet, Patent Owners do not––and cannot––contest either.” Id. at 6 (citing
`Prel. Resp. 27 (PO not disputing prior constructions.)). Petitioner also
`contends that it relies on the same prior art in connection with claims 1 and
`23 “because the Board is already familiar with it and because of its
`preclusive effect on Patent Owners.” Id. at 2. Petitioner further contends
`that “[n]ot using the same art for the features would be inefficient, could
`potentially result in inconsistent findings regarding previously cancel[l]ed
`claims, and would likely elicit cries of unfairness from Patent Owners
`having to analyze it anew.” Id.
`Patent Owner, in turn, contends that Petitioner engaged in improper
`road mapping in its challenges to claims 2 and 24 because Patent Owner
`argued during the Ford IPR “that the Ibaraki and Tabata prior art references
`on which Ford relied did not disclose ‘monitor[ing] patterns of vehicle
`operation over time’ as properly construed and the Board agreed.” Sur-reply
`5 (citing Ex. 1011, 11–13, 24–25; Ex. 2002, 19–22). Patent Owner further
`contends that Petitioner “reviewed Patent Owners’ arguments and attempted
`to address them by taking Severinsky from Ford’s other petitions against the
`
`18
`
`
`
`IPR2020-00994
`Patent 7,104,347 B2
`
`’347 patent and combining it with Graf11 from VW’s petition.” Id. (citing
`POPR 10–12).
`
`We find that General Plastic factor 3 weighs in favor of institution.
`There have been no previous challenges to claims 11, 17, 33, and 38 and
`thus, Petitioner has not engaged in improper road mapping with respect to
`these claims because it has not relied on using prior Board decisions for
`guidance in improving its position in a subsequent petition. Rather, it relies
`on the Board’s prior determinations with respect to previously cancelled
`independent claims by using the same prior art to extend that analysis to
`dependent claims 11, 17, 33, and 38. By doing so, it efficiently streamlines
`the analysis to the benefit of the Board and Patent Owner.
`With respect to claims 2 and 24, Petitioner must establish the
`limitations of claims 1 and 23 as a predicate to challenging claims 2 and 24.
`Patent Owner is correct that Petitioner relies on a claim construction
`proffered by Patent Owner during the previous IPRs that the Board adopted,
`and the Federal Circuit affirmed. Petitioner uses that claim construction to
`present its challenge to claims 2 and 24 based on different secondary
`references that were not used by Ford in its prior challenges to claims 2 and
`24. See Pet. Reply 6. Petitioner relies on Severinsky and Bumby, which
`formed the basis for the prior cancellation of claims 1 and 23 in the Ford
`IPRs, and proposes to modify Severinsky and/or Bumby with Graf and
`alternatively with Nii. Pet. 16–26, 44–48. Undoubtedly, Petitioner
`
`
`
`11 Patent Owner submits that “Graf is the U.S. counterpart to UK Patent
`Application GB 2,318,105 . . . on which VW relied to challenge claim 24 of
`the ’347 patent.” Prel. Resp. 12 n.7.
`
`19
`
`
`
`IPR2020-00994
`Patent 7,104,347 B2
`
`considered various findi
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